Virtually every client business engages in licensing. A client may license out its inventions, technology or know-how – software, other form of technology or product or design – or it may license in the software, equipment technology or inventions of other companies. Substantial value in many client companies consists in its licenses. But licenses are complex contracts with mutually inter-dependent provisions related to the scope of use of the underlying property, variable royalties, ownership and adaptation of the underlying property, warranties and other forms of liability. This program will provide you with an intermediate-level guide to drafting and reviewing the most important provisions of licenses, including scope of use, property ownership and adaptation, royalties, warranties and indemnity, and remedies.
Day 1 – July 7, 2016:
• Drafting and reviewing the most important provisions of client licenses
• Defining the scope of the license – usage, territory, time and updates
• Royalties – different structures and audits
• Warranties in licensing – implied and express
• Protecting the exchange of confidential information – employee issues and trade secrets
Day 2 – July 8, 2016:
• Remedies on breach – financial liability and specific performance
• Indemnity – scope of obligation, exclusions, mechanics, remedies/triggers
• Limitation of liability – forms liability and failure of essential purpose
• Risk management – insurance, escrow, force majeure
• IP diligence – what to look for and red flags
Peter J. Kinsella
is a partner in the Denver office of Perkins Coie, LLP, where he has an extensive technology law practice focusing on advising start-up, emerging and large companies on technology-related commercial and intellectual property transaction matters. Prior to joining his firm, he worked for ten years in various legal capacities with Qwest Communications International, Inc. and Honeywell, Inc. Mr. Kinsella has extensive experience structuring and negotiating data sharing agreements, complex procurement agreements, product distribution agreements, OEM agreements, marketing and advertising agreements, corporate sponsorship agreements, and various types of patent, trademark and copyright licenses. Mr. Kinsella received his B.S. from North Dakota State University and his J.D. from the University of Minnesota Law School.